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Dead or Alive: Statuses, Patent Expiries and Kind Codes – Part 2

  • Jul 15, 2021
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I’m exploring statuses, patent expiries and kind codes in a three part series of articles.  The first article on statuses can be found here.

This second instalment looks at patent expiries around the world.

Looping back to the article on statuses for a minute, patent term expiry dates are both theoretical and precise.  Precise in that a definitive end date for the maximum patent term can be calculated, but theoretical in that other events occur to prevent the patent reaching that date.  These events include non-payment of renewal fees (Ceased, Ended), and revocation of the grant of the patent (Revoked).

Patent Expiries

Let’s get United States patent expiries out of the way.  There are a couple of rules to follow, and I have covered those in an earlier article

There’s a transition date of 8 June 1995 where rules moved from the latter of 20 years from filing/17 years from issue to just 20 years from filing.  That date is over 25 years ago now, and almost all of those filed before it have now expired.  I say almost all because I can find a small number with an earliest effective filing date before June 1995 and an issue date after 2004 (because that’s 17 years ago), not to mention any submarine patents we will never know about until they are granted. 

These days most United States patents will expire 20 years after the earliest effective filing date, which is in line with the rest of the world.  That’s not taking into account any patent term adjustments which add days to the expiry date as a result of patent office delay, or any terminal disclaimer that limits the term of a patent to that of another patent.  The number of days of adjustment, and details of terminal disclaimers can be found in PAIR.

Article 33 of the WTO’s TRIPs Agreement states

“The term of protection available [for patents] shall not end before the expiration of a period of twenty years counted from the filing date.”

As such, patents around the world, including the United States, have 20 year patent terms, calculated from the filing date for convention applications, and the international filing date for PCT applications.

The calculation is easy.  A patent filed on 10 April 2017 expires on 10 April 2037.

There are a few exceptions.  Every rule has at least one.

Divisional applications or continuation applications, although physically filed on a later date, take the filing date of the original, or parent application.  Shown below is an example from Australia, for the application 2019210667.  It’s just one in a chain of divisionals stemming from the original application filed in 2007.  Although this application was filed in August 2019, the effective filing date is in September 2007, making the expiry date of this application 7 September 2027 and not 2 August 2039.

The other exception to patent expiries being less than 20 years is through applications such as Australia’s innovation patents or Chinese utility patents, where the application is subject to less scrutiny in exchange for a shorter patent term.  For innovation patents this is eight years, and for utility patents it is ten years.  WIPO helpfully provide a list of countries that have this model of patent filing, and more detail can be found here.

Those two examples cover shorter patent terms but what about patent terms that are longer than 20 years?

Some biologically active ingredients, such as for use in human and veterinary medicines, can take a long time to obtain regulatory approval and get to market, so it is possible to obtain an extension of the patent term for up to five years as compensation for the time lost.  These are generally known as supplementary protection certificates (SPCs) or patent term extensions (PTEs).  Not all countries allow for such extensions of the patent term, but those who do include countries through Europe, North America and Asia, as well as Australia.

So, in summary, patent expiries can easily be calculated, especially for anything filed so far this century, but take care with older United States patents, and check whether an patent is a utility model filing or is subject to a patent term extension, in order to determine the expiry date, and don’t forget to use this in combination with status information to determine if a patent is dead or alive.

In part 3 I’ll look at how to read and understand kind codes.

Authored by Frazer McLennan and Paul Harrison